A response that is unlikely to be accepted
Tuesday 14th May 2013
An American patent attorney has discovered the dangers of unprofessional conduct. Not only is it a disservice to your client or your relationship with the Intellectual Property office, but, in America, submissions to the Patent Office become publically available.
Dennis Crouch, on his informative blog at www.patentlyo.com, published a response, which was publicly available on the USPTO website but later removed, presumably because it lacked decorum and courtesy (MPEP 1.3). The response, which included the italicised comments of this article, is angry, unprofessional and offensive. Complaining about the examiner personally and attacking the Patent office does not help the arguments made or to create a more effective claim, nor does it uphold the professional code of conduct required from US Patent attorney, or a member of The New Zealand Institute of Patent Attorneys (NZIPA).
“…what would it take for a patent application to be approved? Do we have to write patent applications in crayon? Does a patent application have to come with some sort of pop-up book?”
Responding to examination reports is not always straightforward, nor are claims that effectively distinguish an invention from prior art always easy to draft. Often disagreement arises between the Examiner and attorney on the interpretation of a term, or claim, causing exasperation. However, it is important that the Examiner and attorney acknowledge that each is trying to do their best in their role, and to maintain professionalism at all times.
“If you can’t motivate yourself to take your job seriously, then you need to quit and let someone else take over what that [sic] actually wants to do the job right. “
The NZIPA Code of Conduct (available on www.nzipa.org.nz) includes requirements that patent attorneys provide confidentiality and candour with their clients, and courtesy and professional conduct to the profession. Breaches of the Code can be referred to the NZIPA Ethics Committee which may admonish reprimand, suspend or expel members for breaches. Under section 102 of the Patents act either the Commissioner or the NZIPA may apply to the court to remove or suspend a patent attorney for dishonesty, professional misconduct, grave impropriety or infamous conduct. Similarly, in the United States any person, agent or attorney practicing patent law may, after notice and the opportunity for a hearing, be disciplined by the Director of the USPTO if they are shown to be “incompetent or disreputable, or guilty of gross misconduct…”.
“Clearly, the combination of references would render the final product to be inoperable for its intended use.”
The Ministry of Business, Innovation and Employment (MBIE) has signed a bilateral agreement with IP Australia to implement a trans-Tasman patent attorney regime (TTPA). This will, once implemented in legislation, create a trans-Tasman IP disciplinary Tribunal to oversee the profession. Sanctions for misconduct will include reprimand, suspension or cancellation of registration. The Australian administrative appeals tribunal (AAT) may review any decision which can then be appealed to Australian Federal Court on questions of law. This is likely to see a similar standard of professional duty for patent attorneys in both NZ and Australia.
“Have you even read the patent application? I’m curious.”
Patent jurisdictions around the world value and protect balanced and professional conduct of all parties involved in patent applications. A Patent attorney must remember that his/her duty is to his/her client and that nothing is gained by sending angry rhetoric to the Intellectual property office. It is especially important to remember this when the submitted documents form part of the public record.